Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA197771
`ESTTA Tracking number:
`03/12/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177695
`Defendant
`Estefan Enterprises, Inc.
`KAREN L. STETSON, ESQ.
`MAF at KSTETSONLAW.COM
`P.O. BOX 403023
`MIAMI, FL 33139
`UNITED STATES
`Opposition/Response to Motion
`Karen L. Stetson
`kls@kstetsonlaw.com, maf@kstetsonlaw.com
`/Karen L. Stetson/
`03/12/2008
`BCC Opposition Response to Motion to Suspend.pdf ( 4 pages )(24154 bytes )
`Marrero Motion for voluntary dismissal FINAL.pdf ( 18 pages )(90215 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK
`
`OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91177695
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`ROBERTO NOBLE,
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`vs.
`
`Opposer,
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`ESTEFAN ENTERPRISES, INC.,
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`Applicant.
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`/
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`APPLICANT EEI’S RESPONSE TO NOBLE’S
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`MOTION TO SUSPEND PROCEEDINGS
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`Applicant, Estefan Enterprises, Inc. (“EEI”), hereby files its response in
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`opposition to Noble’s Motion to Suspend Proceedings and states as follows:
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`Nine (9) months after filing the instant opposition proceeding, Noble has suddenly
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`brought to the Board’s attention the pendency of the Marrero action —— an action filed by
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`the same counsel in November 2006 on behalf of Noble’s purported licensee, Marrero
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`Enterprises of Palm Beach, Inc., in the United States District Court for the Southern
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`District of Florida. At the time Noble filed the instant opposition proceeding, the
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`Marrero action had already been pending for seven (7) months, yet no notice of
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`pendency of related action was filed when this proceeding was instituted by Noble
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`despite the fact that the Marrero action was clearly known to Noble. This action would
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`be entirely superfluous if the issues raised herein were already to be determined in the
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`Marrero action, as Noble now incorrectly claims. Curiously, Noble does not attempt to
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`explain this obvious inconsistency in his Motion to Suspend.
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`

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`What is also curious, is the timing of Noble’s Motion to Suspend. The Marrero
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`action was filed a year and a half ago, purportedly to protect Marrero’s right to use “Coco
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`Bongo” as the name of its nightclub. Ten months thereafter, Marrero changed the name
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`of its nightclub, thereby mooting the Marrero action. Now that EEI has filed a Motion
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`for Voluntary Dismissal to end the Marrero litigation based on the name change (see
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`Exhibit A hereto), Noble suddenly seeks to have this proceeding and a ruling on EEI’s
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`fully briefed and pending Motion to Dismiss delayed.
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`The Marrero action involves a claim by Marrero ‘flely for a declaratory
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`judgment of non—infringement” between COCO BONGO as a trademark and EEI’s
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`BONGOS CUBAN CAFE trademark (see ‘J1 3 of Complaint for Declaratory Relief
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`attached as Exhibit A to Noble’s Motion to Suspend) and a counterclaim asserted by EEI
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`against Marrero and Noble for infringement of EEI’s BONGOS CUBAN CAFE mark
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`(see Counterclaim attached as Exhibit B to Noble’s Motion to Suspend). Unlike the
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`Marrero action, Noble’s opposition proceeding herein does not involve the issue of
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`likelihood of confusion; indeed, there are no allegations regarding likelihood of
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`infringement or, as pointed out by EEI in its pending Motion to Dismiss, any allegations
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`by Noble of any damage to him as a result of EEI’s applied for trademark that would
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`state a claim herein.
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`EEI has filed a dispositive Motion to Dismiss,1 which has been fully briefed
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`since August 10, 2007, on the procedural deficiencies of Noble’s opposition proceeding,
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`namely, that any claim that EEI’ s mark is merely descriptive has long since been waived
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`1 On August 2, 2007, the Board suspended the proceedings herein retroactive to Julyl7, 2007
`pending disposition of EEI's motion to dismiss pursuant to Trademark Rule 2.127(d). Per the Board’s
`Order, “[a]ny paper filed during the pendency of this motion which is not relevant thereto will be given no
`consideration.” Therefore, for this reason alone, the Board should not consider Noble’s Motion.
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`by Noble's failure to assert that claim as a compulsory counterclaim in the parties’
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`ongoing Consolidated Proceedings No. 91121980, and that Noble lacks standing to
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`oppose EEI’s mark. The filing of this Motion to Suspend was clearly intended to prevent
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`the Board from ruling on EEI’s Motion to Dismiss. Pursuant to TBMP § 510.02:
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`[i]f there is pending, at the time when the question of suspension of
`proceedings before the Board is raised, a motion which is potentially
`dispositive of the case, the potentially dispositive motion may be decided
`before the question of suspension is considered. The purpose of this rule is
`to prevent a party served with a potentially dispositive motion from
`escaping the motion by filing a civil action and then moving to suspend
`before the Board has decided the potentially dispositive motion.
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`This case is an even more compelling example of an attempt to evade a dispositive ruling
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`than the example set forth in the Board’s Rule, where the so—called “similar action” was
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`already pending at the time this case was filed, yet no notice of pendency was filed until
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`many months thereafter and only after a dispositive motion was filed and fully briefed.
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`The issue of whether this opposition proceeding is properly brought before the
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`Board as set forth in EEI’s pending Motion to Dismiss is not before the Court in the
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`Marrero action. Noble, as Marrero’s licensor, was recently joined as a necessary party to
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`the Marrero action and has not yet filed an answer. EEI does not want this proceeding
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`interfering with the registration of its logo until such time as the Marrero action is
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`determined. As EEI has addressed in detail in its Motion to Dismiss, Noble has no ability
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`to have the Board determine the issue presented in this opposition proceeding because
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`such claims were waived for failure to raise them as a compulsory counterclaim and for
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`Noble’s lack of standing. Therefore, it is futile for the Board to suspend the proceedings
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`herein and defer ruling on EEI’s dispositive Motion to Dismiss until the determination of
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`the Marrero action.
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`

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`As Noble has indicated in its Motion to Suspend, the Board has recently
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`suspended Consolidated Proceedings No. 91121980 pending the outcome of the Marrero
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`action which 1 brought to the Board’s attention in those proceedings. Unlike here, the
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`Consolidated Proceedings and the Marrero action raise the same issue, namely, the
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`likelihood of confusion between the parties’ respective marks.
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`WHEREFORE, Applicant, Estefan Enterprises, Inc., respectfully requests that
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`the Board deny Noble’s Motion to Suspend Proceedings.
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`Respectfully submitted,
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`KAREN L. STETSON, ESQ.
`Attorneys for Applicant
`Estefan Enterprises, Inc.
`P.O. Box 403023
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`Miami, Florida 33140
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`Telephone (305) 532-4845
`Facsimile (305) 604-0598
`
`By: s/Karen L. Stetson
`Karen L. Stetson, Esq.
`Florida Bar No. 742937
`
`Meredith A. Frank, Esq.
`Florida Bar No. 502235
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`CERTIFICATE OF MAILING
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`I HEREBY CERTIFY that the foregoing has been sent Via U.S. Mail to
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`Michael Santucci, Esq., SilVerman Santucci, LLP, 500 West Cypress Creek Road,
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`Suite 500, Fort Lauderdale, Florida 33309 on this 12m day of March, 2008.
`
`By: s/Karen L. Stetson
`Karen L. Stetson
`
`

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`UNITED STATES DISTRICT COURT
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`FOR THE SOUTHERN DISTRICT OF FLORIDA
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`WEST PALM BEACH DIVISION
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`CASE NO. 06—8l036—CIV—RYSKAMP
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`MARRERO ENTERPRISES OF PALM
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`BEACH, INC., a Florida corporation,
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`V.
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`Plaintiff/Counter-Defendant,
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`ESTEFAN ENTERPRISES, INC.,
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`a Florida corporation,
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`Defendant/Counter-Plaintiff,
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`V.
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`MARRERO ENTERPRISES OF PALM
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`BEACH, INC., a Florida corporation, and
`ROBERTO NOBLE, SR.,
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`Counter—Defendants.
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`/
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`VOLUNTARY DISMISSAL OF EEI'S AMENDED COUNTERCLAIM
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`EEI'S CONDITIONAL MOTION FOR
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`Defendant/Counter—Plaintiff, Estefan Enterprises, Inc. (“EEI”), by and through
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`undersigned counsel, and pursuant to Rule 41, Fed.R.Civ.P., hereby conditionally moves for the
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`voluntary disn1issal of EEI's amended counterclaim against Counter—Defendants Marrero
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`Enterprises of Palm Beach County, Inc. ("Marrero") and Roberto Noble, Sr. ("Noble"), and in
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`support thereof states:
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`EEI Seeks to End The Needless Expenditure of Both the Court's and the
`I.
`Parties’ Resources Through the Overall Dismissal of this Litigation Which Has Been Made
`Moot By the Name Change of Marrero's Nightclub.
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`EEI files this motion seeking the dismissal of this action in its entirety based upon the
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`fact that, ten months after initiating this action, Marrero changed the name of its nightclub from
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`"Coco Bongo" to "Ibiza" and is no longer engaging in any activities as to which EEI has either
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`objections or claims, thus eliminating any ongoing Article III controversy to support Marrero's
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`declaratory action. EEI's current counterclaim, as amended, contains only a claim for past
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`damages arising from infringing conduct which has now ceased. EEI's primary concern has
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`always clearly been with the name of the nightclub.1 Given the fact that Marrero changed its
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`name, albeit ten months into the litigation, EEI has no desire to continue the litigation merely to
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`pursue the claim for past money damages, and is, accordingly, moving for the voluntary
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`dismissal of its counterclaim in conjunction with the dismissal of Marrero's declaratory action on
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`the conditions stated herein, which conditions include a release from EEI to Counter—Defendants
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`of any claim for past damages and a covenant not to sue with regard to Marrero's current non-
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`objectionable conduct.
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`Despite EEI's lack of objection to the current conduct, Marrero is acting as the stalking
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`horse on behalf of the real—party—in interest, Roberto Noble, Sr. (who has declined to accept
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`service of process since being added as a necessary party)". Marrero is maneuvering to keep this
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`matter alive in order to seek an impermissible "advisory opinion" about hypothetical future
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`trademark usage for purposes of the broader trademark litigation between EEI and Noble which
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`long pre—dates this action. The pending proceedings before the Trademark Trial and Appeal
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`Board ("TTAB") between EEI and Noble pre—date this action by years and encompass all of the
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`issues between the parties with regard to their respective trademarks. The identical issues raised
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`herein are also pending before that tribunal (in addition to broader issues than those encompassed
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`in this action). 3 EEI anticipates that Marrero may argue, as it has in the past when EEI has filed
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`1 From the outset, EEI made clear that the change of the name of Marrero's nightclub was considered by
`EEI to be the only material issue. See, for example, EEI's prior Motion to Dismiss based upon what EEI believed
`was a pre-suit settlement agreement providing for the exact name change that Marrero has now instituted, stating,
`"In the instant case the o_nly essential term of the settlement -- changing the "Coco Bongo" name -- was agreed upon.
`EEI's sole purpose in sending its March 31, 2006 letter to Marrero was to obtain Marrero's agreement to change its
`name, .
`.
`." (D.E. # 5, p 7). Marrero was at all times well aware of the fact that the dispute was all about the name
`change. "After careful consideration of our options,
`.
`. .[I decided] not to change the name of the nightclub;" "[O]f
`significant importance to my company was the timing of any name change;" "I never agreed .
`.
`. to change the name
`of our nightclub." Declaration of Christopher Marrero, D.E. # 11-4, pars. 16, 20, 22.
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`2 Unless Noble changes his mind and cooperates, EEI is advised that the process of effecting service on
`him in Mexico under the Hague Convention can take 4 months or longer.
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`3 Estefan Enterprises Inc. v Bongo, S.A. de C.V. and Roberto Noble, Consolidated Action No. 92042251.
`The Trademark Trial and Appeal Board ("TTAB") is a tribunal which adjudicates and determines trademark rights
`and which enjoys concurrent jurisdiction with the district courts to do so. 15 U.S.C. §§ 1067, 1092 and 1119. In
`addition to the issue of the likelihood of confusion between "Coco Bongo" and "Bongos Cuban Cafe" and all of the
`defenses raised in this case, the TTAB proceeding also involves Noble's registration rights and whether he has used
`the "Coco Bongo" mark in the United states in the manner required to obtain registration rights.
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`dismissal motions based upon the principles that an actual controversy must exist and that
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`judicial time and resources should not be expended needlessly, that EEI is merely trying to
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`"avoid" a ruling on the parties’ summary judgment motions. That is not the case at all. EEI
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`believes that in light of the numerous factual disputes contained in the record herein, summary
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`judgment would be clear error. D.E. # 218. Marrero cannot seriously contend that EEI is
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`seeking to avoid rulings on these issues when it knows very well that a_ll of these issues are
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`already fully briefed and pending before the TTAB in the pre—existing proceedings between EEI
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`and Noble. In fact, that litigation is ready to proceed to trial as soon as this action is concluded.
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`At any rate, the pendency of a fully briefed summary judgment is an insufficient basis to justify
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`the denial of a voluntary dismissal without prejudice. See, e. g., Pontenberg v. Boston Scientific
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`Corp., 252 F.3d 1253, 1259 (llth Cir. 2001).
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`It is in anticipation of the Court's denial of Marrero's summary judgment motion and the
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`amount of work still remaining both for the Court and the parties to ready the case for trial and
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`conduct the trial" —— for no good reason —— that dismissal is sought. EEI simply believes that
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`under these circumstances it is pointless to continue to litigate this matter and that it is
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`appropriate at this juncture that this matter be dismissed in its entirety. Enough is enough. The
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`controversy that this action was about is over and it is not proper to utilize the resources of the
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`Court to litigate hypothetical trademark issues in order generate an advisory opinion.
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`Accordingly, pursuant to Rule 4l(a)(2), EEI moves for the voluntary dismissal of its
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`counterclaim based upon the following conditions:
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`the Court's granting EEI's pending Renewed Motion to Dismiss Declaratory
`(a)
`Action for Lack of Subject—Matter Jurisdiction (D.E. # 214);
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`EEI will provide Marrero and Noble with a release for any damages claim based
`(b)
`upon lit activity in connection with Marrero's West Palm Beach nightclub;
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`EEI will provide Marrero and Noble with a covenant not sue with regard to their
`(c)
`current activity (i.e. advertising a "Coco Bongos Cancun" theme night at a nightclub that does
`not contain the word "Bongo" or "Bongos" in its name);
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`(d)
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`the dismissal shall be "without prejudice";
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`4 There are presently approximately 15 motions pending and, going forward, the action will have to
`achieve "at issue" status after Noble is joined, discovery will need to be conducted regarding Noble, the parties’ pre-
`trial stipulation will need to be modified after discovery and the disposition of motions, the parties will need to
`prepare for trial, including motions in limine, and ultimately a jury trial will need to be conducted.
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`(e)
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`each party will bear its own fees and costs.
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`EEI submits that the stated conditions are fair, reasonable and even—handed, serve to
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`avoid any prejudice to all parties and should be accepted by the Court, resulting in the dismissal
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`of this action in its entirety. Rule 4l(a)(2) provides that "an action may be dismissed at the
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`plaintiffs request only by court order, on terms that the court considers proper." Since Noble has
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`not yet been served, EEI can dismiss all claims as to him without prejudice without leave of
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`court. See, Rule 4l(a)(l), Fed.R.Civ.P. Noble, therefore, has no ability to object to the dismissal
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`of EEl's counterclaim in any event. If EEI must proceed vis—a—vis Marrero, however, it intends
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`to continue to proceed against Noble as well since he is the real party in interest and owner of the
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`trademark at issue. In the event the Court determines that any of the conditions upon which the
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`proposed voluntary dismissal is based are not satisfactory, EEI's intention is to withdraw this
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`conditional motion for voluntary dismissal. See, eg. Yofle v. Keller Industries, Inc., 582 F.2d
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`982, 983 (5th Cir. l978)(party moving for voluntary dismissal under Rule 4l(a)(2) may
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`withdraw motion and decline to dismiss if conditions imposed by district court are
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`unacceptable); Marlow v. Winston & Strawn, 19 F.3d 300, 304 (7th Cir. 1994) (party seeking
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`voluntary dismissal has option of withdrawing motion if district court's conditions are too
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`onerous and proceeding instead to trial on the merits); 9 Wright & Miller, Fed. Prac. & Proc.
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`Civil 2d § 2366 at 303 (where the plaintiff finds the court—imposed conditions “too onerous, [he]
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`need not accept the dismissal on those terms”).
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`A strikingly similar situation to the one here occurred in Read Corp. v. Bibco Equipment
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`Co., Inc., 145 F.R.D. 288 (D.N.H. 1993) in which the Court ordered the Rule 4l(a)(2) voluntary
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`dismissal of a patent infringement damages claim without prejudice, with each party to bear their
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`own fees and costs where, as here, the plaintiff had achieved its main goal because the infringing
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`activity had ceased during the case, the money damages claim was only an incidental part of the
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`case, the allegedly infringing party was acting as a "stalking horse" for another party (represented
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`by the same counsel) who refused to voluntarily appear, and the defendant was not even paying
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`its own legal fees. For the Court's convenience, we briefly discuss each of the conditions of
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`EEl's proposed voluntary dismissal in the following sections.
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`

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`II.
`This Matter
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`The Voluntary Dismissal On the Specified Conditions Will Fairly Conclude
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`a.
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`The Granting of EEI's Renewed Motion to Dismiss the Declaratory Action
`for Lack of Subject Matter Jurisdiction.
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`There would be no point in EEI voluntarily dismissing its counterclaim if Marrero's
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`declaratory action remained pending. As the Court recognized in its order joining Roberto Noble
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`as a necessary party (D.E. # 170), EEI's infringement claim and Marrero's request for a
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`declaration of "non—infringement" are merely mirror images of one another, and the dismissal of
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`the counterclaim while the declaratory action remains pending will not save any resources or
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`terminate this moot action.
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`1.
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`Trademark Infringement Depends Upon the Particular Use in the
`Marketplace
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`As detailed in EEI's pending Renewed Motion to Dismiss for Lack of Subject Matter
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`Jurisdiction (D.E. # 214), Marrero's current activities (advertising a "Coco Bongo" theme night
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`held at a nightclub without the word "Bongo" in its name) is not likely to cause confusion. EEI's
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`theory of the case has always been, and remains, that Marrero infringed its mark by operating a
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`nightclub named Coco Bongo because that particular use of the mark was likely to, and did,
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`cause confusion as to the source of the nightclub services in the relevant group of consumers,
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`i.e., nightclub goers. As the Eleventh Circuit has recently cautioned, EEI can only evaluate
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`whether the use of a mark is likely to cause confusion based on the actual and particular use in
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`the real—world marketplace at any given time. Custom Manufacturing and Engineering, Inc. v.
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`Midway Services, Inc., 508 F.3d 641 (l lth Cir. 2007). At the core of this issue is the fact that, in
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`an infringement action, a court does not have plenary power to consider hypothetical uses of a
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`trademark. It must determine whether there is a likelihood of confusion as to the source of
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`services based upon the actual use of the mark in the marketplace, taking into consideration the
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`unique facts and circumstances of the use.
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`2.
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`The Current Use Is Not Likely to Cause Confusion
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`As more fully set forth in EEI's motion, and supported by the Declarations of EEI's
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`President Frank Amadeo as well as the Declarations of club promoters Robert Rivera and Edison
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`Farrow, Marrero's references to a Coco Bongo event at Club Ibiza are typical of such nightclub
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`events and related flyers, and are not likely to confuse nightclub customers into thinking that the
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`source of the nightclub services is anything other than the actual nightclub identified on the flyer
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`as the location of the sponsored advertised event. (D.E. # 214, Exhibits C, D and E). As aptly
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`stated by one of those nightclub promoters:
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`I have been involved in marketing and promoting
`In all of the years that
`nightclubs,
`including theme/party nights
`sponsored by others,
`I have not
`experienced any confusion by customers about who was actually providing the
`nightclub services. While flyers and advertisements might contain the logos or
`names of a sponsoring person or corporate entity, the identity of the nightclub
`who is offering the nightclub services is clear from the advertisement as it is
`important not to confuse the customers for the purpose of finding the venue/club
`easily.
`
`Declaration of Robert Rivera, D.E. # 214, Ex D, par. 6.
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`EEI's lack of any objection to Plaintiffs current use of "Coco Bongos,” is now reflected
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`in EEI's Amended Answer, Affirmative Defenses and Counterclaim (D.E. # 182), which
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`specifically distinguish the Plaintiffs past infringing conduct from its present non—infringing
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`conduct, and which, in recognition of the belated name change, no longer seeks injunctive relief,
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`treble damages, or attorney's fees.
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`(D.E. # 182, ‘M 13, 26, 27, 31 32, 34, 35 38, 39). For
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`example, at paragraph 18, EEI's counterclaim now reads: "Ten months after filing the instant
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`declaratory judgment action and three months after the filing of EEI's counterclaim, Marrero, on
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`or about September 14, 2007, changed the name of its nightclub from "Coco Bongo" to "Ibiza"
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`and is now operating the nightclub as "Ibiza" and not as "Coco Bongo." All damages alleged in
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`the counterclaim are limited to the period "until approximately September 13, 2007" (i.e. until
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`the name changed). EEI specifically alleges that Marrero's current use of the mark to advertise a
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`"Coco Bongo" theme night is not likely to cause confusion and not objectionable. D.E. # 182,
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`pars. 20, 21. The Court's Order denying EEI's previous request to dismiss the declaratory action
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`due to lack of a continuing controversy indicated that EEI should amend its counterclaim to
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`reflect the lack of dispute.
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`As detailed in EEI's Renewed Motion to Dismiss, the type of theme night and related
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`advertising flyers being used by Marrero are typical in the nightclub industry. EEI has explained
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`its position and supported its motion with declarations detailing the practices in the industry. By
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`contrast, Marrero relies only upon its own counsel's mischaracterization of its own already self-
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`serving affidavit, to implore the Court that, even after changing the nightclub's name, Marrero is
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`still engaged in infringing activity. There is a discrepancy between the declaration and Marrero's
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`counsel's argument, which stretches the declaration to the point of trying to equate the holding of
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`a Coco Bongos Theme Night at Club Ibiza with the nightclub actually being named Coco
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`Bongos on those specific nights. Based on the clear record and the declarations on file
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`explaining these types of theme nights in the industry, that is plainly not the case. Such theme
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`nights are not likely to confuse customers that the nightclub services provided by Club Ibiza are
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`being offered by anyone other than Club Ibiza. The use of the Coco Bongo Cancun logo is likely
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`to suggest a sponsorship or affiliation between Club Ibiza and Coco Bongo Cancun, but is not
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`likely to suggest a sponsorship or affiliation between Club Ibiza and Bongos Cuban Cafe or
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`between Coco Bongos and Bongos Cuban Cafe —— the affiliation and/or sponsorship is apparent.
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`EEI's lack of objection, amendment of its counterclaim, and its proposed covenant not to sue
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`with regard to the current conduct all demonstrate and establish the lack of any continuing
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`controversy and the court's lack of subject matter jurisdiction over the declaratory action,
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`mandating its dismissal.
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`3.
`
`This Case May Not Be Used to Obtain An Advisory Opinion As
`Marrero/Noble Is Attempting
`
`The sole material issue for EEI has always been the name change of Marrero's nightclub.
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`After Marrero did change the name of the nightclub as EEI had sought, ten months after
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`initiating this litigation, EEI assumed that the case would quickly settle thereafter, but it did not.
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`EEI has maintained from the outset that this litigation is forum shopping concocted by Noble,
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`using the bare licensee Marrero as his straw man, to attempt to obtain rulings on issues already
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`long pending between Noble and EEI in another forum, the Trademark Trial and Appeal Board
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`("TTAB") to use for that case or for hypothetical future use. Marrero's efforts to maintain its
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`declaratory action despite having satisfied EEI's only concern and objection by changing the
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`name of its nightclub underscores the ulterior purpose of trying to obtain an impermissible
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`advisory opinion from this Court.
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`The Court's recent order determining that Noble is a necessary party who must be joined
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`because a bare licensee such as Marrero has no standing to bring such a non—infringement
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`declaratory action acknowledges the reality of the situation. There is no excuse for
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`Marrero/Noble having knowingly initiated this action in the name of the wrong party and not in
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`

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`the name of the real—party—in—interest, Noble.5 That decision, an obvious tactic for Noble to test
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`the waters by making legal arguments in the name of Marrero regarding issues already pending
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`between the parties before the TTAB, resulted in a huge and unnecessary expenditure of
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`resources as Marrero strenuously resisted all discovery related to Noble, vehemently resisted the
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`joinder of Noble and argued repeatedly that this matter had "nothing to do with Noble." See,
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`e. g., D.E. # 49, p 2 ("This case rises and falls on the actions of Plaintiff and Defendant, and not
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`with those of Roberto Noble or any third party."); D.E. # 53, p 3 ("these claims are based solely
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`upon Marrero's own use of the trademarks in question, not that of Noble"); D.E. # 5 8, p 3
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`("[T]his action is not about [Marrero's] relationship with, or any use of the Coco Bongo marks by
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`Noble .
`
`. .This action concerns, and is lin1ited to, Marrero's own use of the mark."); D.E. # 68, p
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`3 ("the fact that Marrero is using the trademarks under license from Noble has no bearing"); D.E.
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`# 69, p 10 ("Noble's use of the mark and his activities have no effect on the issue of whether
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`Marrero is infringing or unfairly competing with Estefan"); D.E. # 78, p 3 ("it is Marrero's
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`actions which are relevant to the central issues."); D.E. # 88, p 1 ("Roberto Noble Sr. is not the
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`‘real party in interest’ nor is Mr. Noble Sr. asserting any rights in this case").
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`Now, after Marrero's use of the trademark has changed to a non—objectionable use,
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`Marrero's new position, as admitted by its counsel at the hearing of January 10, 2008, is that the
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`Court should proceed to decide the declaratory action because it would be "helpful" to Noble
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`(who nevertheless will not join the case voluntarily) to have these issues decided as they could
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`impact on his hypothetical use of the mark with other future U.S. licensees. There are no other
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`licensees of Noble operating nightclubs with the word "Bongo" in their name. The case has,
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`therefore, transformed from one that has "nothing to do with Noble" to one that has "everything
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`to do with Noble" even though he refuses to voluntarily submit to this Court and has not yet been
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`5 Counsel tried to excuse the fact that suit was knowingly brought by a party with no legal right to do so at
`the hearing of January 10, 2008 by saying that the action was brought by Marrero because that is to whom EEI had
`directed its pre-suit demands. However, EEI was not aware of the "licensing arrangement" between Marrero and
`Noble until over 2 months after this suit was initiated, so obviously EEI did not know its demands should have been
`directed to Mr. Noble. But this E known all along to Marrero and its counsel, who is also counsel for Noble.
`Moreover, as the case law filed in support of EEI's motion to join Noble (granted by the Court) makes clear, as a
`bare licensee, Marrero never had the right to institute this lawsuit by itself as it did, but could have brought it,
`together with Noble as the licensor, trademark owner and real party in interest. See, e. g., Lisseveld v. Marcus, 173
`F.R.D. 689 (M.D. Fla. 1997); Association ofCo-op. Members, Inc. v. Farmland, 684 F.2d 1134, 1143 (5th Cir.
`1982); Lion Petroleum ofMissouri, Inc. v. Millennium Super Stop, LLC, 467 F. Supp. 2d 953 (E.D. M0. 2006).
`There is simply no excuse.
`
`

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`formally served.
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`There is no justification for having the Court and the parties work through the
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`voluminous and extensive issues raised herein where there is no longer an actual live
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`controversy. The hypothetical possibility of some future use of the mark does not create a
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`justiciable trademark dispute, and what Marrero is seeking from the Court is an impermissible
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`advisory opinion on these issues. It is well settled that such advisory opinions are improper, and
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`particularly so with regard to hypothetical questions of infringement. For example, in Benitec
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`Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1349 (Fed. Cir. 2007) it was explained that
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`where the defendant's current use of the patent in question was not alleged to be infringing
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`activity, there could be no advisory declaratory judgment regarding hypothetical future uses:
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`We recognize that Nucleonics would like to remove any concerns it or its
`potential investors might have over possible infringement of the Benitec
`patent. We do not express an opinion on whether Nucleonics's animal work could
`ever be the subject of an infringement suit. We merely hold that Nucleonics E
`not carry its burden of showing an existing justiciable controversy. As we
`observed in Teva:
`[F]ederal courts are to decide only actual controversies by
`judgment which can be carried into effect, and not to give opinions on moot
`guestions or abstract propositions....
`
`The Benitec Court emphasized "the necessity of avoiding issuing advisory opinions on
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`hypothetical facts" and refused, as this Court should, to engage in such an opinion, stating:
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`We also recognize that Nucleonics wishes to receive the benefit of a ruling on the
`validity and scope of Benitec's patent now, while Nucleonics undertakes any
`nascent animal work. There is currently, however, no “substantial controversy,
`between |Benitec and Nucleonics|, of sufficient
`immediacy and reality to
`warrant the issuance of a declaratory judgment.” Medlmmime, 127 S.Ct. at
`771. And there may never be.
`
`Similarly, in Reno Air Racing Ass 'n., Inc. v. McCord, 452 F.3d 1126, 1135 (9th Cir.
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`2006) where the claimant conceded that the trademark owner had exclusive rights in its "pylon"
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`trademark (resembling the Eiffel Tower) but sought a declaration that some version of the pylon
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`mark could be used without infringing, the court held that what was sought was an impermissible
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`advisory opinion, stating:
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`In effect, in the face of these concessions, what McCord really asks from us is a
`prophylactic declaration that pylons in general are generic and that he can use
`some form of a pylon with impunity. Although we are not unsympathetic to his
`effort to cabin a safe harbor regarding future use, we are not in the business of
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`

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`that McCord's future
`providing such advisory opinions, and to the extent
`depictions are challenged by Reno Air, it is for the district court to detern1ine in
`the first instance whether trademark infringement has occurred.
`
`In Snnmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1060 (7th Cir 1995),
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`the court similarly refused to offer such an advisory opinion.
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`We bypass all concerns about product extensions. Sunmark worries that Ocean
`Spray will use “sweet—tart” in selling its new line of candies, creating a clash
`within the domain of its own trademark. It also wonders whether, if it expands
`into fruit juices,
`it will be able to employ “sweet—tart” despite Ocean Spray's
`senior use (if that phrase is indeed a trademark in the juice business). .
`.
`|I |f and
`when Sweet Tarts becomes the appellation of a fruit juice drink, either party
`may seek adjudication of the other's rights to use “sweet—tart” in the same
`line of goods. Any judicial venture into the subject without a concrete dispute
`would yield an advisory opinion.
`
`In Windsurfing Intern.